NATIONAL BISCUIT CO. v. KELLOGG CO., (D.Del. 1938)

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Docket Number

No. 980.

Motions

Motion to dismiss : Granted

Attorney(S)

Hugh M. Morris, of Wilmington, Del., Drury W. Cooper and Thomas J. Byrne (of Cooper, Kerr Dunham), and Charles A. Vilas, all of New York City, for plaintiff. Ward Gray, of Wilmington, Del., and Crichton Clarke, of New York City, for defendant.

Judges

John Percy Nields

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Smart Summary

Factual and Procedural Background

The case arises following a mandate from the Circuit Court of Appeals directing the District Court to issue a perpetual injunction against the defendant, Kellogg Company. The injunction prohibits Kellogg from using the name "SHREDDED WHEAT" as its trade name and from advertising or selling its product in the form and shape of the plaintiff's biscuit, thereby protecting the plaintiff's trademark rights. After the injunction was served on January 8, 1938, the defendant filed a petition on January 20, 1938, proposing a program to continue its business by differently cartoning and packaging its whole wheat biscuit product. Plaintiff moved to dismiss this petition. Subsequently, the defendant filed a supplemental petition on February 4, 1938, stating that it had already begun implementing the proposed program and sought the court's guidance on whether this program violated the injunction and, if so, requested specifics on the violation so it could revise its program accordingly. The court addressed the propriety of this request for advisory guidance.

Legal Issues Presented

Whether the court should issue an advisory opinion to the defendant regarding the permissibility of its ongoing business program under the existing injunction.
Whether the defendant’s request for guidance on potential violation of the injunction constitutes a proper use of the court’s authority.

Arguments of the Parties

Defendant's Arguments

The defendant contends that it is seeking advice from the court not about a proposed future action but about a program it has already implemented in filling orders.
The defendant requests the court to clarify whether its current packaging and marketing program violates the injunction, and if so, to specify the particulars so it can revise the program accordingly.
The defendant attempts to distinguish its request from typical advisory opinion requests by emphasizing the ongoing nature of its conduct.

Plaintiff's Arguments

The plaintiff moves to dismiss the defendant’s petition, presumably arguing that the court should not issue advisory opinions.

Table of Precedents Cited

No precedents were cited in the provided opinion.

Court's Reasoning and Analysis

The court reasoned that its role is to decide actual cases and controversies, not to provide advisory opinions on what parties may or may not do. The defendant’s petition, despite its claim that it concerns a program already in operation, still requests an advisory opinion. The court emphasized that the established practice in this circuit and district prohibits such requests. Additionally, the court noted that if the defendant’s conduct violates the injunction, it is the plaintiff’s responsibility to initiate contempt proceedings for adjudication. Therefore, the defendant’s petition is procedurally improper and must be dismissed.

Holding and Implications

The court granted the plaintiff’s motion to dismiss the defendant’s petition.

This decision directly terminates the defendant’s request for an advisory opinion on its ongoing program under the injunction. The court reaffirmed the principle that advisory opinions are outside the scope of judicial authority and that enforcement of injunctions through contempt proceedings must be initiated by the plaintiff. No new precedent was established; the ruling adheres to established procedural norms within the circuit.

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NATIONAL BISCUIT CO. v. KELLOGG CO.

NIELDS, District Judge.

Following the receipt of the mandate of the Circuit Court of Appeals for this circuit in the above cause this court decreed: "That a perpetual injunction issue out of and under the seal of this court directed to said defendant, Kellogg Company, its officers, agents, servants, employees and attorneys and those in active concert or participating with them, its successors and assigns, restraining and enjoining it and them, and each of them, from the use of the name `SHREDDED WHEAT' as its trade name and from advertising or offering for sale its product in the form and shape of plaintiff's biscuit in violation of its trade mark."

Pursuant to such decree a writ of injunction was served upon defendant on January 8, 1938.

January 20, 1938, defendant filed its petition setting forth a program with respect to the continued operation of its business and proposing to differently carton and package its whole wheat biscuit product. Plaintiff moved to dismiss this petition.

February 4, 1938, defendant filed its supplemental petition setting forth that since the hearing of the motion to dismiss, February 1, 1938, it had been necessary for defendant in filling its orders for defendant's products to enter upon its program, and defendant has been and is shipping its biscuit in the manner set forth in that program. The prayer of the supplemental petition is: "Wherefore, your petitioner repeats the prayer contained in said petition filed herein on January 20, 1938, in order that petitioner may be advised by the Court whether the program outlined in said petition and placed into operation by defendant is a violation of said injunction and if, in the Court's opinion, such program does violate said injunction in any manner that the particulars in which it violates the same may be pointed out by the Court so that defendant may have the opportunity to revise its said program to meet the views to be expressed by the Court."

In effect, the petition of defendant requests the court to advise the defendant what it can and what it cannot do. Courts are established to decide cases, not to advise parties. That is a matter for counsel. The practice invoked by defendant is contrary to the settled practice in this circuit and district. Defendant attempts to distinguish its situation from situations controlled by the established practice. It states that it is asking advice not upon proposed conduct but upon a program that has been entered upon and is now existent. This does not alter the matter. Defendant is still asking for an advisory opinion. It is not in a position to have the court adjudicate whether its conduct is in contempt of the court's injunction. Such an adjudication should be had only at the instance of plaintiff in contempt proceedings.

Plaintiff's motion to dismiss must be granted.